william cass presentation
TRANSCRIPT
Cantor Colburn LLP
William J. Cass, Partner• Co-Chair Additive Practice
• Co-Chair Litigation Department
• Mechanical Engineer
• Commercial Multi-engine Instrument Pilot
• Cantor Colburn LLP is a full service IP law firm
– Established Additive Manufacturing Group
• Ranked #10 Nationally in 2014 for Issued Patents
• International Network of Foreign Associates
2
World Intellectual Property
Association
188 Patent Cooperation Treaty (PCT) States
3
http://www.wipo.int
US and China Drive International Patent
Filing Growth in Record-Setting Year
4
• The United States of America and China drove record-level patent-filing activity via WIPO in 2013 as the number of annual international patent applications surpassed the 200,000 mark for the first time. International trademark and industrial design filings also achieved new record-breaking levels.
• The total number of filings under WIPO’s Patent and Cooperation Treaty (PCT) applications filed in 2013 amounted to 205,300, representing 5.1% growth compared with 2012.2 The United States of America (US) saw double digit growth in PCT filings and together with China accounted for 56% and 29% of the total PCT growth, respectively.
• With 57,239 applications in 2013, the US exceeded in 2013 its previous filing peak of 54,046 applications reached prior to the global financial crisis in 2007. China surpassed Germany to become the third largest user of the PCT system, with Japan as the second-highest user. The US remains the most-active user of the system
• Geneva, March 13, 2014 PR/2014/755
http://www.wipo.int/pressroom/en/articles/2014/article_0002.html
CopyrightMode Of Expression
• Expression of work fixed in tangible form
• Excludes others from copying or using form of expression
Design Patents
• Protect the Ornamental Features of a Design (but not the functional features)
– Automotive Manufacturers
• Bumpers, grills, seats, lights, steering wheels, etc.
• Consumer products
• Trade Dress
– Exclusive use – develop trade dress rights
Patents – The Right To Exclude
• Protect functional aspects of an invention
• Invention must be useful, new, and not obvious
• Typically Years to Obtain
• Expensive – especially to enforce
Reasons to Patent• Protection
– Can the invention be easily reversed engineered?
• Then a patent may be necessary
• Devices should be given consideration
• Asset development
– Increase the value of the business
• Attracting investment
• Marketing
• Discouraging the competition
• Defensive strategies
Reasons Not to Patent• Expensive to obtain
– Attorneys fees
– Maintenance fees
– Not always successful
• Publication
– Teaching the technology
• Difficulty in enforcement
– May not be able to establish a process and/or method infringes
– Cost
The IP AgreementAn Important Form of
Legal Protection
• Employment/Non-Competition
• Joint Development Agreement
• Non-Disclosure Agreement
• Ownership Agreement
• The License
The IP Agreement
• Scope – covers most situations
• Flexible - may be customized
• Expedient – patents take years!
• Additional protection -
–Warranties and Representations
–Risk Allocation
Global Strategies
• PATENT COOPERATION TREATY
• EUROPEAN PATENT APPLICATION
• SELECTING CERTAIN COUNTRIES
– Reduce the number of necessary patents and fees
– Consider U.S., Germany, Japan and China, as an example
• Berne Convention on Copyrights
• The Hague System for the International Registration of Industrial Designs
U.S. Member of the Hague Union
• On February 13, 2015 the USPTO announced that the United States has deposited its instrument of ratification to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) with the World Intellectual Property Organization.
• The treaty will go into effect for the United States on May 13, 2015.
http://www.uspto.gov/about-us/news-updates/united-states-deposits-instrument-ratification-geneva-act-hague-agreement
The Hague Systemfor Industrial Design Applications
• Currently, U.S. applicants must file individual industrial designs applications in each jurisdictions where rights are desired.
• Hague Agreement will allow U.S. applicants to file a single international design application either with WIPO in Geneva, Switzerland, or the USPTO to obtain protection in multiple economies.
• Register up to 100 designs in over 62 territories with the filing of one single international application
http://www.uspto.gov/about-us/news-updates/united-states-deposits-instrument-ratification-geneva-act-hague-agreement
Protection in Europe –but what is Europe?
There are 38 European Patent
Office countries
-plus 2 Extension countries
The European Patent Office
Countries are the 28 EU
countries plus:
Albania Switzerland Iceland Liechtenstein Monaco
Macedonia Norway Serbia San Marino Turkey
Protection in Europe –but what is Europe?
Population:
European Union countries:
ca. 504,000,000
(July 1, 2013 projection)
European Patent Office countries:
(considering only Turkey and Switzerland
as additional countries):
- Turkey – ca. 75,000,000 (2013 estimate)
- Switzerland – ca. 8,000,000 (2013 data)
→ ca. 587,000,000
… US population: ca. 317,000,000 (2013)
So what is Europe?
Europe is a huge potential market...
→ tip: Don't just file in a few European countries!
DE application: (at filing, off of PCT application)
Official fees at filing: Euro 430
Translation costs: 2,000 Euro
Total: 2,430 Euro
EP application: (at filing, off of PCT application)
Official fees: 2,400 Euro
Translation costs at filing: -
Total: 2,400 Euro
Assumptions: ISA = EPO; 15 claims; 35 pages; 10,000 words
Cover all of “Europe” at the outset
tip: Don't just file in a few European countries!
EP v national applications:
EP application more advantageous because:
- reduced costs per country at filing
- reduced attorney fees (1 attorney involved, 1 procedure
before 1 Patent Office)
- no translations needed during prosecution
- potential to obtain protection in 38 + 2 countries (several
years to think about where – at no additional cost!)
Unitary Patent: Entry into forceWhat needs to happen (by law)?
1) ratification of UPC agreement by 13 states,including DE, UK and FR
.… 6 states already ratified!
AT, BE, DK, FR, MT, and SE
….UK is assessing public feedback regarding ratification
….IE must hold referendum
.… what if GB leaves the EU???
Unitary Patent: Entry into force
What needs to happen (by law)?
2) amendment of EU regulation No 1215/2012 onjurisdiction and recognition + enforcement ofdecisions
… entered into force January 2015!
UP: Entry into forceWhat needs to happen (in practice)?
ES + IT had filed action against new system (now dismissed)
but:
ES filed new action against new system (language
discrimination)
→ action needs to be dealt with by EUCJ!
Advocate General Yves Bot rejected Spain’s arguments in aNovember 2014 opinion and recommended that the EUCJdismiss the action.
in addition...
UP: Entry into force
What needs to happen (in practice)?
• UPC + EPO: administrative functions
• UPC: rules of procedure (17th draft markup final one???)
• UPC: selection and training of judges
• UPC: creation of court facilities
• UPC: creation of IT system
• UPC: decision on fees (opt-in/out, court fees, etc.)
• EPO: decision on fees (post-grant renewal fees + unitary effect fees)
Asia and Pacific
• World Intellectual Property Organization
• Regional Bureau for Asia and the Pacific
The Regional Bureau for Asia and the Pacific is responsible for provision of legal and technical assistance to 38 countries, including 25 developing countries and 13 LDCs, in the Asia Pacific region. This assistance is provided in cooperation with relevant sectors in WIPO.
U.S. Patents in Additive Manufacturing
Additive Manufacturing Conference
United States Patent and Trademark Office January 23, 2013
U.S. Patents in Additive Manufacturing
• Patent Applications Filed
• Average 680/Year
• Over the Last 10 Years
• 200 Classifications
• New Art Unit Established at The United States Patent Office
• 3000 Issued PatentsAdditive Manufacturing Conference
United States Patent and Trademark Office January 23, 2013
Supply SpoolsBuild Filament
Support Filament
Heated Nozzles
Build Platform
Fused Deposition Modeling
US 5,121,329
Be Careful - Meaningful Patent Protection Still Exists
• Materials
–Object
–Support
–Special Properties
• Hardness, glass transition, fillers, porosity, etc.
• Treatments
–Vapor deposition
Be Careful - Meaningful Patent Protection Still Exists
• Build Chambers/Heating Cabinets• Material Handling
– Moving platforms, conveyors• Internet protocols
– Remote construction, user input and design choice
• Physical components– UV lights, lasers, liquefiers, dispensing
systems
The Key To Success
• Due Diligence
–Determining the right to use the Intellectual Property for the intended purpose
–A Well Drafted Agreement
• Formal Protection–Patents, Trademarks, Copyrights, Trade
Secrets. . .
• Dual Protection